Ex Parte Becker et al - Page 5

               Appeal 2007-1844                                                                             
               Application 10/012,200                                                                       
                                          PRINCIPLES OF LAW                                                 
                                    1.  OBVIOUSNESS (Prima Facie)                                           
                      The Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 17-18,                     
               148 USPQ 459, 467 (1966), stated that the following factual inquiries                        
               underpin any determination of obviousness:                                                   
                      Under § 103, [1] the scope and content of the prior art are to be                     
                      determined; [2] differences between the prior art and the claims                      
                      at issue are to be ascertained; and [3] the level of ordinary skill                   
                      in the pertinent art resolved.  Against this background, the                          
                      obviousness or nonobviousness of the subject matter is                                
                      determined.  Such (4) secondary considerations as commercial                          
                      success, long felt but unsolved needs, failure of others, etc.,                       
                      might be utilized to give light to the circumstances surrounding                      
                      the origin of the subject matter sought to be patented.  As                           
                      indicia of obviousness or nonobviousness, these inquiries may                         
                      have relevancy.                                                                       
                      Where the claimed subject matter involves more than the simple                        
               substitution one known element for another or the mere application of a                      
               known technique to a piece of prior art ready for the improvement, a holding                 
               of obviousness must be based on “an apparent reason to combine the known                     
               elements in the fashion claimed.”  KSR Int’l v. Teleflex, Inc., 127 S. Ct.                   
               1727, 1740-41, 82 USPQ2d 1385, 1396 (2007).  That is, “there must be                         
               some articulated reasoning with some rational underpinning to support the                    
               legal conclusion of obviousness.”  Id., 127 S. Ct. at 1741, 82 USPQ2d at                     
               1396 (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed.                      
               Cir. 2006)).  Such reasoning can be based on interrelated teachings of                       
               multiple patents, the effects of demands known to the design community or                    
               present in the marketplace, and the background knowledge possessed by a                      



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